'Fired' Topped by 'Hired' At the Trademark Office

By ERIC DASH

Published: August 30, 2004

Donald J. Trump is again gearing up to dismiss the young apprentices on his reality television series with the words ''You're Fired.'' But recently, lawyers from United States Patent and Trademark Office turned down his first attempt to register the expression for games and other playthings.

The reason was that some toys and games using Mr. Trump's boardroom buzzwords, ''You're Fired,'' could be mistaken for ''You're Hired!,'' an educational board game designed to give middle-school students a taste of the job hunt. For years, the children's role-playing contest has held the trademark for the phrase, and the similarities between the marks and the goods of the parties are so great as to create a likelihood of confusion, lawyers from the trademark office said in an initial refusal letter.

Franklin Learning System Inc., a small educational company based in Westport, Conn., registered the federal trademark for the ''You're Hired!'' board game in 1997. Executives at the company said they were unaware of the ''You're Fired'' trademark filings and declined to comment.

The ruling is a minor setback for Mr. Trump, who turned his surname into a global brand in the 1980's, but more recently has tried to turn the reality show's popular catchphrase into a personal cash cow.

Legal experts say that Mr. Trump can still obtain the rights to the slogan for games by persuading the trademark office to overturn its decision or by purchasing the conflicting trademark outright.

W. Mack Webner, the lawyer at the firm Sughrue Mion who filed the ''You're Fired'' trademark application on behalf of Mr. Trump, said that he saw no potential cause for confusion between the two games. However, Mr. Webner added that he may narrow the focus of that ''You're Fired'' trademark filing to casino games, for which the rights were not contested.

''It's one thing if you are selling games to kids,'' he said. ''It's another if you are talking about adult games for casino use.''

Starting last February, Mr. Trump applied to federally register the trademark of four variations of the expression (''You're Fired'' ''You're Fired!'' ''Your Fired The Donald'' ''You're Fired Donald J. Trump'') in at least 10 categories ranging from alcoholic beverages to sporting goods, but he has not received final approval for any of them, according to public filings.

Legal experts said conflicts were common early in the registration process, as government lawyers scrutinize applications for similarities between the sight, sound and source of the marks.

''It's not just a matter that consumers would overlook the difference between the F and the H,'' Robert W. Zelnick, who heads the trademark practice at McDermott, Will & Emery in Washington.

Earlier this month, Mr. Trump began promoting Trump the Game, a board game in which players finish off rivals with the words ''You're Fired.'' Several trademark lawyers said the chance for confusion or infringement diminishes the further one gets from a similarly sounding title.

Interestingly, Franklin is not the only business wanting to trademark the expression ''You're Hired'' for a game. Another company is trying to register the phrase for that use, along with other product categories like cosmetics, food services and pet accessories. But it may run into the same roadblock as Mr. Trump. That business is the licensing and production company owned by Mark Burnett, Mr. Trump's partner on ''The Apprentice.'' Neither Mr. Burnett's lawyer or licensing representatives returned calls seeking comment.

Photo: The frenzy over ''The Apprentice,'' the reality show that stars Donald J. Trump, has made ''You're Hired!'' and ''You're Fired!'' popular phrases. (Photo by Ruby Washington/The New York Times)